USPTO Patents Application 09895654

REMARKS:

Claims 1-28 are currently pending in the application.

Claims 1-28 stand rejected under 35 U.S.C. § 103(a) over U.S. Patent No.
6,823,495 to Vedula, et al. {"Vedula").

The Applicant wishes to thank the Examiner for withdrawing the rejection of claims
1-28 under 35 U.S.C. § 102(e) overTenorio et al.

Reconsideration and withdrawal of the outstanding rejections is respectfully
requested in light of the following remarks.

REJECTION UNDER 35 U.S.C. § 103 :

Claims 1-28 stand rejected under 35 U.S.C. § 103(a) over Vedula.

The Applicant respectfully submits that Vedula fails to disclose, teach, or suggest
each and every element of independent Claims 1-28. Thus, the Applicant respectfully
traverses the Examiner's obvious rejection of Claims 1-28 under 35 U.S.C. § 103(a) over
Vedula.

Vedula Fails to Teach, or Suggest Various Limitations Recited in Applicant's Claims

For example, with respect to independent Claim 1 , this claim recites:

A schema translation tool, comprising:

a mapping module operable to:

receive information regarding a source schema and a target
schema, the source and target schemas each comprising a taxonomy
comprising a hierarchy of classes into which products may be categorized,
at least the source schema further comprising a product ontology
associated with one or more of the classes, each product ontology
comprising one or more product attributes; and

associate one or more source classes of the source schema
with one or more target classes of the target schema; and

Response to Office Action
Attorney Docket No. 020431.0841
Serial No. 09/895,654
Page 11 of 20

an ontology generation module operable to generate a product
ontology for each of the target classes based on the product
ontologies of the associated source classes. (Emphasis added)

Independent Claims 9, 17, and 25-28 recite similar limitations. Vedula fails to disclose
each and every limitation of independent Claims 1, 9, 17, and 25-28.

The Applicant respectfully submits that Vedula fails to disclose, teach, or suggest
independent Claim 1 limitation regarding an "ontology generation module operable to
generate a product ontology for each of the target classes based on the product ontologies
of the associated source classes". The Office Action alleges that this limitation is taught
by the processing engine 26 and map 28 in Figure 2 of Vedula, which supports the
creation of the graphical interface in Figure 5 of Vedula. The Applicant respectfully
disagrees. In fact, independent Claim 1 recites generating] a product ontology for each
of the target classes based on the product ontologies of the associated source
classes". However, according to Vedula, column 10, lines 28 - 44, both the source and
target have properties associated with them. That is, when the user, in Vedula, selects the
target document, that document already has properties, or attributes, defined. As a
product ontology comprises product attributes, it follows that Vedula teaches a
predefined product ontology for the target In fact, the Office Action acknowledges
this, (19 October 2006 Office Action, Page 2) which states "Both the source schema and
target schema define an ontology.... As seen in Fig. 3C, each record has defined
attributes, thus the ontologies in both the source schema and the target schema contain
attributes". In contrast, independent Claim 1 provides for generating ontology for the
target based on the ontology of the source. Thus, if Vedula teaches a predefined
ontology for the target, it follows that Vedula fails to teach or suggest the limitation
regarding "generating] a product ontology for each of the target classes based on the
product ontologies of the associated source classes". Therefore, Vedula fails to
teach, suggest, or even hint at generating] a product ontology for each of the target
classes based on the product ontologies of the associated source classes", as
recited in independent Claim 1 .

Response to Office Action
Attorney Docket No. 020431.0841
Serial No. 09/895,654
Page 12 of 20

In addition, since Vedula teaches that each target and source document has a
predefined ontology associated with it, it follows that Vedula fails to teach an ontology
generation module, because, as taught by Vedula, there is no need to generate an
ontology.

The Applicant further respectfully submits that the Examiner's Official Notice fails to
cure the deficiencies of Vedula. The Examiner's Official Notice fails to disclose, teach, or
suggest independent Claim 1 limitations regarding generating] a product ontology for
each of the target classes based on the product ontologies of the associated source
classes". In fact, the Examiner's Official Notice merely states that forming the records of
Vedula to contain non-functional descriptive material, such as product information, would
have been obvious to one of ordinary skill in the art. Thus, the Examiner's Official Notice
fails to teach, suggest, or even hint at "generating] a product ontology for each of the
target classes based on the product ontologies of the associated source classes",
as recited in independent Claim 1 . Thus, the Applicant respectfully submits that the Office
Action fails to state a prima facie case of obviousness as the proposed combination fails to
teach or suggest all the limitations of independent Claim 1 .

The Examiner's Official-Notice is improper under MPEP § 2144.03

The Applicant respectfully submits that it is not clear what the Examiner teaches by
the Official Notice or even the extent in which the Examiner is taking Official Notice. The
Applicant respectfully requests clarification as to the subject matter for which the Examiner
is taking Official Notice. The Applicant respectfully traverses the Official Notice
because the asserted facts, as best understood by the Applicant, is not supported
by substantial documentary evidence or any type of documentary evidence and
appear to be the Examiner's opinions formulated using the subject Application as a
template, which constitutes impermissible use of hindsight Furthermore, under
these circumstances, it is inappropriate for the Examiner to take Official Notice without
documentary evidence to support the Examiner's conclusion. (See MPEP § 2144.03).
The Applicant respectfully requests the Examiner to produce authority for the
Examiner's Official Notice.

Response to Office Action
Attorney Docket No. 020431.0841
Serial No. 09/895,654
Page 13 of 20

Only "in limited circumstances," is it "appropriate for an examiner to take official
notice of facts not in the record or to rely on common knowledge in making a rejection".
(MPEP § 2144.03). "Official notice unsupported by documentary evidence should only
be taken by the examiner where the facts asserted to be well-known, or to be common
knowledge in the art and are capable of instant and unquestionable demonstration as
being well-known. With respect to the subject Application, the Examiner's statement
that "forming the records to contain non-functional descriptive material, such as product
information, would have been obvious to one of ordinary skill in the art", is not capable of
instant and unquestionable demonstration as being well-known. (19 October 2006
Office Action, Page 3). As noted by the court in In re Ahlert, 424 F.2d 1088, 1091, 165
USPQ 418, 420 (CCPA 1970), the notice of facts beyond the record which may be taken
by the examiner must be 'capable of such instant and unquestionable demonstration
as to defy the dispute' (citing In re Knapp Monarch Co., 296 F.2d 230, 132 U.S.P.Q. 6
(C.C.P.A. 1961))." (MPEP § 2144.03(A)). (Emphasis Added).

"It is never appropriate to rely solely on "common knowledge" in the art
without evidentiary support in the record, as the principal evidence upon which a
rejection was based. Zurko, 258 F.3d at 1385, 59 USPQ2d at 1697. (Emphasis Added).
As the court held in Zurko, an assessment of basic knowledge and common sense that is
not based on any evidence in the record lacks substantial evidence support. Id. at 1385,
59 USPQ2d at 1697. See also In re Lee, 277 F.3d 1338, 1344-45, 61 USPQ2d 1430,
1434-35 (Fed. Cir. 2002)." (MPEP § 2144.03(A)). "Ordinarily, there must be some form of
evidence in the record to support an assertion of common knowledge. See Lee, 277 F.3d
at 1344-45, 61 USPQ2d at 1434-35 (Fed. Cir. 2002); Zurko, 258 F.3d at 1386, 59
USPQ2d at 1697 (holding that general conclusions concerning what is "basic
knowledge" or "common sense" to one of ordinary skill in the art without specific
factual findings and some concrete evidence in the record to support these findings
will not support an obviousness rejection). The examiner must provide specific factual
findings predicated on sound technical and scientific reasoning to support his or her
conclusion of common knowledge. See So//, 317 F.2d at 946, 37 USPQ at 801;
Chevenard, 139 F.2d at 713, 60 USPQ at 241. The applicant should be presented with
the explicit basis on which the examiner regards the matter as subject to official notice and

Response to Office Action
Attorney Docket No. 020431.0841
Serial No. 09/895,654
Page 14 of 20

be allowed to challenge the assertion in the next reply after the Office action in which the
common knowledge statement was made." (MPEP § 2144.03(B)). (Emphasis Added).

With respect to the subject Application, the Examiner has not properly Officially
Noticed or not properly based the Official Notice on common knowledge. The

Examiner's conclusory statement:

Forming the records to contain non-functional descriptive material,
such as product information, would have been obvious to one of ordinary
skill in the art." (19 October 2006 Office Action, Page 3).

The above noticed Examiner's conclusory statement does not adequately
address the issue that this statement is considered to be common knowledge or
well-known in the art. The Applicant respectfully submits the following statement, to
further explain why the Examiner's above noticed statement is not considered to be
common knowledge or well-known in the art.

First it is not clear what the Examiner means by "non-functional descriptive
material". In fact, the limitations recited in independent Claim 1 are directed to a
product ontology which is comprised of product attributes. It is not clear how the
Examiner's purported "non-functional descriptive material" relates to an ontology or
product attributes, especially as attributes are properties of the products.

Second, it is not clear how product information can be "non-functional and
descriptive" when the product information forms the basis for the product ontology. As the
product attributes are used to comprise an ontology and ontologies are used to comprise
schemas, it is unclear to the Applicant, how product data can be considered "non-
functional descriptive material" that is unrelated to the substrate.

The Applicant further respectfully submits that the Applicant has adequately
traversed the Examiner's assertion of Official Notice and direct the Examiner s
attention to the pertinent text of the MPEP, which states:

If applicant adequately traverses the examiner's assertion of official
notice, the examiner must provide documentary evidence in the next Office
action if the rejection is to be maintained. See 37 CFR 1.104(c)(2). See also

Response to Office Action
Attorney Docket No. 020431.0841
Serial No. 09/895,654
Page 15 of 20

Zurko, 258 F.3d at 1386, 59 USPQ2d at 1697 ("[T]he Board [or examiner]
must point to some concrete evidence in the record in support of these
findings" to satisfy the substantial evidence test). If the examiner is relying on
personal knowledge to support the finding of what is known in the art, the
examiner must provide an affidavit or declaration setting forth specific factual
statements and explanation to support the finding. See 37 CFR 1.104(d)(2).
(MPEP§ 2144.03(C)).

Thus, if the Examiner continues to maintain the rejection of independent Claim 1
based on the Examiner's Official Notice, the Applicant respectfully requests that the
Examiner provide documentary evidence as necessitated by MPEP § 2144.03(C).
Furthermore, if the Examiner is relying on personal knowledge to support the finding of
what is known in the art, the Applicant further requests that the Examiner provide an
Affidavit or Declaration setting forth specific factual statements and explanation to
support the finding as further necessitated by MPEP § 2144.03(C).

The Applicant's Claims are Patentable over the Proposed Vedula-Official-Notice
Combination

The Applicant respectfully submits that, for at least the reasons set forth above,
independent Claim 1 is considered patentably distinguishable over the proposed
combination of Vedula and the Examiner's Official Notice, either individually or in
combination. With respect to independent Claims 9, 17, and 25-28 each of these claims
include limitations similar to those of independent Claim 1 . Thus, independent Claims 1 , 9,
17, and 25-28 are considered patentably distinguishable over Vedula and the Examiner's
Official Notice, either individually or in combination.

Dependent Claims 2-8, 10-16, and 18-24 depend from independent Claim 1, 9, and
17, respectively. As mentioned above, each of independent Claims 1, 9, and 17 are
considered patentably distinguishable over Vedula and the Examiner's Official Notice.
Thus, dependent Claims 2-8, 10-16, and 18-24 are considered to be in condition for
allowance for at least the reason of depending from an allowable claim.

Response to Office Action
Attorney Docket No. 020431.0841
Serial No. 09/895,654
Page 16 of 20

Furthermore, Claim 5 recites limitations not taught by the combination Vedula and
the Examiner's Official Notice. Vedula fails to teach or suggest the limitation of "wherein
the ontology generation module is operable to generate a product ontology for a target
class by determining the intersection of the product attributes included in the product
ontologies of the associated source classes". The Office Action alleges that Vedula
teaches this limitation by mappings 16a and 16b in Figure 1. However, as stated in
Vedula, the mappings are created by a user, using graphical mapping indicia (collectively
16). (See Vedula, column 9, lines 1-11). Thus, the cited passage of Vedula teaches that
user chooses the relationships between the products. The cited passage of Vedula does
not teach that an ontology generation module determines the intersection of product
attributes, as recited in Claim 5. Further, as argued above in regards to independent
Claim 1 , Vedula does not teach an ontology generation module as Vedula does not teach
ontology generation. Thus Vedula fails to teach or suggest the limitation of "wherein the
ontology generation module is operable to generate a product ontology for a target class
by determining the intersection of the product attributes included in the product
ontologies of the associated source classes".

The Applicant further respectfully submits that Vedula fails to teach or suggest the
all the limitations of Claim 6, including the limitation of "wherein the ontology generation
module is further operable to generate a product ontology for a parent class of a
plurality of target classes by determining the intersection of the product attributes
included in the product ontologies of the target classes, the product ontologies of the
target classes having been generated by the ontology generation module". First, the
Applicant respectfully submits that Vedula does not teach an ontology generation module
and therefore fails to teach or suggest the limitation of "wherein the ontology generation
module is further operable to generate a product ontology for a parent class of a
plurality of target classes by determining the intersection of the product attributes
included in the product ontologies of the target classes, the product ontologies of the
target classes having been generated by the ontology generation module". Second,
the Applicant respectfully submits that Vedula teaches that the target already has a
defined ontology. Therefore, Vedula fails to teach or suggest "the product ontologies of
the target classes having been generated by the ontology generation module".

Response to Office Action
Attorney Docket No. 020431.0841
Serial No. 09/895,654
Page 17 of 20

Third, the Applicant respectfully submits that since Vedula teaches that the target already
has a defined ontology, Vedula fails to teach or suggest "generate a product ontology
for a parent class of a plurality of target classes by determining the intersection of the
product attributes". Thus, the Applicant respectfully submits that Vedula fails to teach or
suggest the limitation of "wherein the ontology generation module is further operable to
generate a product ontology for a parent class of a plurality of target classes by
determining the intersection of the product attributes included in the product ontologies of
the target classes, the product ontologies of the target classes having been
generated by the ontology generation module".

For at least the reasons set forth herein, the Applicant respectfully submits that
Claims 1-28 are not rendered obvious by the proposed combination of Vedula or the
Examiner's Official Notice. The Applicant further respectfully submits that Claims 1-28 are
in condition for allowance. Thus, the Applicant respectfully requests that the rejection of
Claims 1- 28 under 35 U.S.C. § 103(a) be reconsidered and that Claims 1-28 be allowed.

THE LEGAL STANDARD FOR OBVIOUSNESS REJECTIONS UNDER 35 U.S.C. § 103:

To establish a prima facie case of obviousness, three basic criteria must be met.
First, there must be some suggestion or motivation, either in the references
themselves or in the knowledge generally available to one of ordinary skill in the art,
to modify the reference or to combine reference teachings. Second, there must be a
reasonable expectation of success. Finally, the prior art reference (or references when
combined) must teach or suggest all the claim limitations. The teaching or suggestion
to make the claimed combination and the reasonable expectation of success must both be
found in the prior art, and not based on applicant's disclosure. In re Vaeck, 947 F.2d
488, 20 U.SP.Q.2d 1438 (Fed. Cir. 1991); M.P.E.P. §2142. (Emphasis Added).
Moreover, all the claim limitations must be taught or suggested by the prior art. In re
Royka, 490 F.2d 981, 180 U.S.P.Q. 580 (CCPA 1974). If an independent claim is
nonobvious under 35 U.S.C. § 103, then any claim depending therefrom is nonobvious. In
re Fine, 837 F.2d 1071, 5 U.S.P.Q.2d 1596 (Fed. Cir. 1988); M.P.E.P. § 2143.03.

Response to Office Action
Attorney Docket No. 020431.0841
Serial No. 09/895,654
Page 18 of 20

With respect to alleged obviousness, there must be something in the prior art as
a whole to suggest the desirability, and thus the obviousness, of making the
combination. Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561 (Fed. Cir. 1986).
(Emphasis Added). In fact, the absence of a suggestion to combine is dispositive in an
obviousness determination. Gambro Lundia AB v. Baxter Healthcare Corp., 110 F.3d
1573 (Fed. Cir. 1997). The mere fact that the prior art can be combined or modified does
not make the resultant combination obvious unless the prior art also suggests the desir-
ability of the combination. In re Mills, 916 F.2d 680, 16 U.S.P.Q.2d 1430 (Fed. Cir. 1990);
M.P.E.P. § 2143.01. The consistent criterion for determining obviousness is whether the
prior art would have suggested to one of ordinary skill in the art that the process should be
carried out and would have a reasonable likelihood of success, viewed in the light of the
prior art. Both the suggestion and the expectation of success must be founded in the prior
art, not in the Applicant's disclosure. In re Vaeck, 947 F.2d 488, 20 U.S.P.Q.2d 1438
(Fed. Cir. 1991; In re O'Farrell, 853 F.2d 894 (Fed. Cir. 1988); M.P.E.P. § 2142.

A recent Federal Circuit case makes it clear that, in an obviousness situation, the
prior art must disclose each and every element of the claimed invention, and that any
motivation to combine or modify the prior art must be based upon a suggestion in the prior
art. In re Lee, 61 U.S.P.Q.2d 1430 (Fed. Cir. 2002). Conclusory statements regarding
common knowledge and common sense are insufficient to support a finding of
obviousness. Id. at 1434-35.

Response to Office Action
Attorney Docket No. 020431 .0841
Serial No. 09/895,654
Page 19 of 20

CONCLUSION:

In view of the foregoing remarks, this Application is considered to be in condition for
allowance, and early reconsideration and a Notice of Allowance are earnestly solicited.

Although Applicant believes no fees are deemed to be necessary; the undersigned
hereby authorizes the Commissioner to charge any additional fees which may be required,
or credit any overpayments, to Deposit Account No, 500777.

Please link this application to Customer No. 53184 so that its status may be
checked via the PAIR System.

Respectfully submitted,

1/16/07

SJL/blj

Date VJajne^E. Walton/ Registration No. 47,245

Steven J. Laureanti, Registration No. 50,274
Daren C. Davis, Registration No. 38,425
Michael Alford, Registration No. 48,707
Law Offices of James E. Walton, P.L.L.C.
1169 N. Burleson Blvd., Suite 107-328
Burleson, Texas 76028
(817) 447-9955 (voice)
(817) 447-9954 (facsimile)
steven@waltonpllc.com (e-mail)

CUSTOMER NO. 53184

ATTORNEYS AND AGENTS FOR APPLICANT

Response to Office Action
Attorney Docket No. 020431.0841
Serial No. 09/895,654
Page 20 of 20